[00:00:06] Speaker 04:
Okay, next case is number 17-1008, Smith and Nephew, Incorporated, against Herlogic, Incorporated.

[00:00:21] Speaker 04:
Mr. Lenny?

[00:00:34] Speaker 04:
When you're ready.

[00:00:46] Speaker 00:
Good morning, and may it please the court.

[00:00:49] Speaker 00:
This appeal involves two issues, a claim construction issue and an obviousness issue.

[00:00:53] Speaker 00:
Today, Smith and Leffie would like to focus on the claim construction issue and rest on the briefing on the obvious issues, unless of course the court has questions on the obviousness issue.

[00:01:03] Speaker 00:
On claim construction, Smith and Effie consistently relied on this court's instruction that elements listed separately in a claim should be construed as distinct components of the invention, and also that claim terms should be construed.

[00:01:15] Speaker 00:
But your specification says they're the same thing.

[00:01:18] Speaker 00:
Specification doesn't equate the two terms.

[00:01:21] Speaker 00:
Are you talking about the sections of the specification that says translation is reciprocation?

[00:01:27] Speaker 00:
So we addressed this in our briefing, but both of those sections of the specification

[00:01:33] Speaker 00:
immediately before those sentences, the specification is describing the invention as rotating and translating.

[00:01:46] Speaker 00:
And what the next sentence does is it explains that it's the translation that's reciprocating as opposed to the rotation.

[00:01:52] Speaker 00:
So there's a plausible explanation that is clarifying that when you're introducing the reciprocation in, the reciprocation could be referring to both rotation or the translation.

[00:02:03] Speaker 00:
And that's what both of those sentences do.

[00:02:05] Speaker 00:
They're both mirror images of each other.

[00:02:08] Speaker 00:
They both have the same prefatory sentence that describes invention as reciprocating and translating.

[00:02:13] Speaker 03:
Do you think the board's interpretation of those sentences, which differs, is also plausible?

[00:02:20] Speaker 00:
I don't.

[00:02:20] Speaker 00:
I think if you look at the rest of the specification, the skilled artist is going to look at the specification as a whole.

[00:02:26] Speaker 00:
And if you look at the rest of the specification, it distinguishes between the reciprocation motion and the translation motion.

[00:02:32] Speaker 00:
And that's confirmed by the drawings as well.

[00:02:35] Speaker 00:
So I think the strongest section of the specification that distinguishes the two is the discussion in column four, beginning at line 19, that describes first the reciprocation motion.

[00:02:48] Speaker 00:
So it indicates, column four, line 19, that the helical member 150 also moves in an axial direction, e.g.

[00:02:56] Speaker 00:
reciprocates as a result of the interaction of the translation piece with the helical channels, as further described below.

[00:03:03] Speaker 00:
So the next four paragraphs are talking about how the translation piece interacts with the grooves in order to change direction of the cutting member.

[00:03:15] Speaker 00:
And it explains that the piece tracks the channels and then smoothly transitions from the left-hand groove to the right-hand groove, and that effectuates a change in direction.

[00:03:31] Speaker 00:
Specification in this section is also talking about how this is accomplished all through just a rotational force in a single direction, and contrasting that with the ability to change direction, having the rotational force change direction itself.

[00:03:47] Speaker 00:
So at the very end of column four, and this is at line 59, column four, it signals a transition to talk about the translation.

[00:03:55] Speaker 00:
And it says, the coupling of the follower 145A to the helical channels 156 and 158

[00:04:01] Speaker 00:
causes the helical member to also translate.

[00:04:05] Speaker 00:
And that statement is important for two reasons.

[00:04:07] Speaker 00:
First, it's signaling that the previous discussion is discussing the reciprocation, which is the change of direction of the member.

[00:04:15] Speaker 00:
And then it's also talking about that it also translates, so it's distinguishing between reciprocation and translation.

[00:04:22] Speaker 00:
And then the patent goes on, excuse me, the specification goes on in column five to discuss translation, and in particular,

[00:04:29] Speaker 00:
how the device cuts tissue.

[00:04:32] Speaker 00:
And it discusses figures seven, eight, nine, and 10, which are directed to the cutting portions of the device.

[00:04:41] Speaker 00:
And in the entire discussion in column five, talking about cutting, it mentions in three separate occasions that it cuts during translation.

[00:04:50] Speaker 00:
Reciprocation is never mentioned in column five.

[00:04:53] Speaker 00:
And this distinction between reciprocation and translation

[00:04:56] Speaker 00:
is confirmed when you look at the figures.

[00:04:58] Speaker 00:
So in particular, figures 3A and 3B explain and show to the skilled artisan that the interior central part of that helical member with the helical channels has a constant pitch that produces the translation motion.

[00:05:15] Speaker 00:
When the translation piece gets to the either end of the helical member, it transitions and the pitch of the groove is changed to effectuate

[00:05:25] Speaker 00:
a deceleration, a momentary stop, and then a change in direction followed by acceleration.

[00:05:32] Speaker 00:
And then when the helical channel changes its pitch again, it's producing the pure translation motion.

[00:05:38] Speaker 00:
So what we have here is an invention where the claims are separately claiming rotation, reciprocation, and translation in contrast to the prior art that often had either rotation and reciprocation or rotation and translation.

[00:05:56] Speaker 00:
By separately claiming each of these, it explains that you're effectively able to cut a particular type of tissue here.

[00:06:02] Speaker 00:
And it introduces the separate translation motion in between the reciprocation.

[00:06:08] Speaker 00:
And I think the board's broad constructions, which for reciprocation broadly encompasses all translation, reads the translation element out of the claim.

[00:06:21] Speaker 00:
And per this court's instruction,

[00:06:24] Speaker 00:
constructions are preferred that don't render claim elements superfluous.

[00:06:28] Speaker 00:
And the board really never addressed that issue.

[00:06:31] Speaker 00:
The board, in its rehearing decision and in its initial decision, explained that because the two terms were construed differently, reciprocation is back and forth, and translation is just in the axial direction, that that resolved the issue.

[00:06:47] Speaker 00:
And what they said is that their constructions

[00:06:50] Speaker 00:
didn't render them to be mutually exclusive or redundant of each other.

[00:06:54] Speaker 00:
And even if that's true, it still doesn't resolve the issue of because reciprocation is broadly construed to include all translation motion, the translation element is rendered superfluous and is essentially read out of the claim.

[00:07:12] Speaker 01:
Can I turn you to one specific obviousness question?

[00:07:15] Speaker 01:
Yes.

[00:07:15] Speaker 01:
The Galloway, the analogous art reference.

[00:07:18] Speaker 01:
Yes.

[00:07:18] Speaker 01:
Assuming we disagree with you on everything else, we find the claim construction OK, and we find all the other combinations OK, what claims does Galloway affect if we find it's not analogous art?

[00:07:31] Speaker 01:
Is it unnecessary, or do you know which claims it is?

[00:07:35] Speaker 00:
I have to look back at the board's decision on that rejection, I believe.

[00:07:41] Speaker 00:
The Galloway rejection was rejection eight, capital in the view of Galloway, which was affirmed by the board.

[00:07:50] Speaker 00:
Matter of fact, claims one, two, four through 12, 19 to 22.

[00:07:55] Speaker 01:
No, but those claims are also covered by other combinations, are they not?

[00:08:00] Speaker 01:
They are.

[00:08:00] Speaker 01:
I want to know, we agree with the board on everything else.

[00:08:05] Speaker 01:
Is there anything we have to reverse if we disagree with them on analogous art?

[00:08:10] Speaker 01:
Was Galloway necessary to any rejection?

[00:08:15] Speaker 00:
Now, I believe that the obvious rejections were duplicative and that Galloway didn't address a specific claim that wasn't addressed by the other obviousness combinations.

[00:08:24] Speaker 03:
I thought that maybe you had one claim and it was claim 26.

[00:08:28] Speaker 03:
So you might want to check that when you sit down.

[00:08:31] Speaker 00:
OK.

[00:08:32] Speaker 00:
Absolutely.

[00:08:36] Speaker 00:
So I think the board

[00:08:38] Speaker 00:
never address the issue of whether or not the translation element was rendered superfluous.

[00:08:43] Speaker 00:
And I think that's the biggest problem here is that it's read out of the claims in two respects.

[00:08:48] Speaker 00:
First, the claim requires the simultaneous motion of rotation, reciprocation, and translation in response to a single rotational force.

[00:08:58] Speaker 00:
But it also requires that the cutting occur during rotation and translation.

[00:09:05] Speaker 00:
Again, when translation is encompassed within the definition of reciprocation, that cutting limitation has no meaning at all.

[00:09:15] Speaker 00:
It's read out of the claim because if reciprocation necessarily includes translation, you've now converted that limitation into a limitation where cutting can occur during rotation and reciprocation or translation.

[00:09:30] Speaker 00:
So it doesn't further meaningfully restrict the claim.

[00:09:34] Speaker 00:
and the board's construction does not sufficiently distinguish between the different motions that are described here.

[00:09:42] Speaker 03:
I misspoke.

[00:09:43] Speaker 03:
I meant claims 20 through 22.

[00:09:44] Speaker 03:
20 through 22.

[00:09:45] Speaker 00:
Yes.

[00:09:46] Speaker 00:
We'll take a look at that.

[00:09:49] Speaker 00:
But again, I think our position is that a skilled artisan looking at the specification of the whole and looking at the drawings would understand that there are in fact three separate motions that are being described here and that there's a distinction between

[00:10:02] Speaker 00:
the axial translation that occurs when the tracker is with followers tracking in the middle portion of the helical groove, and that the specification describes how the deceleration and the stopping and the turning around and the acceleration, and that's confirmed by the drawings that show the change in pitch and resulting in a different motion that is distinct and separate from the translation motion when the cutting has occurred, and that's clear from the specification.

[00:10:32] Speaker 00:
And I'm getting close to my rebuttal time, so I'll save the rest of the time for rebuttal.

[00:10:37] Speaker 04:
OK.

[00:10:38] Speaker 04:
Thank you.

[00:10:47] Speaker 04:
Mr. Wolf.

[00:10:48] Speaker 02:
Thank you.

[00:10:50] Speaker 02:
May it please the court, Your Honor is correct.

[00:10:52] Speaker 02:
I believe it's Claim 20 that is unique to the Galloway reference.

[00:10:56] Speaker 02:
I think everything else overlaps.

[00:10:57] Speaker 02:
21 was not an issue.

[00:11:00] Speaker 02:
I would need to double check on 22, but it's either 20 or 20 and 22, Your Honor.

[00:11:04] Speaker 02:
20 is the lead one.

[00:11:05] Speaker 02:
That's Galloway unique.

[00:11:08] Speaker 02:
Talking briefly about the claim construction issue, counsel started by saying what the motivation was for the sentences.

[00:11:16] Speaker 02:
Translation is reciprocation, and translating is reciprocating.

[00:11:20] Speaker 02:
Whatever the motivation was, whatever the back story, the subtext, the sentences say what they say.

[00:11:25] Speaker 02:
Translation is reciprocation, and reciprocating is translating.

[00:11:30] Speaker 02:
And of course, later in the patent, we're told separately that there is simultaneous translation on the one hand and simultaneous rotation and reciprocation.

[00:11:42] Speaker 02:
So in yet another way, the interlocking nature of the claims, I think that's if I remember high school algebra, that's the transitive property.

[00:11:51] Speaker 02:
If A equals B and B equals C, then A equals C, something like that.

[00:11:55] Speaker 02:
So we're told time and again.

[00:11:57] Speaker 02:
that these motions happen, they happen simultaneously.

[00:12:02] Speaker 04:
Let's go to the product.

[00:12:05] Speaker 04:
I think that it's generally accepted that there is a version, the most precise version of this device, which is not shown in the prior art, is the problem that the claims that have been presented, at least the broader claims, nonetheless

[00:12:22] Speaker 04:
read on the prior art and are not sufficiently restricted to the precise combination of translation and rotation?

[00:12:31] Speaker 02:
Your Honor, here's where I think it's important to separate the helix claims, which are everything up to claim 32, not including 32, and then 32 and 33, which don't mention the helix.

[00:12:42] Speaker 02:
So when you say that the claims aren't precisely in the prior art, I would respectfully disagree in saying

[00:12:48] Speaker 02:
Claims 32 and 33 are precisely in the prior art.

[00:12:52] Speaker 04:
So some of the claims are in art.

[00:12:54] Speaker 04:
Is that the issue that's before us?

[00:12:56] Speaker 04:
That the claims that aren't limited to the helix are sufficiently broad to read on the prior art, even though they're also presumably directed to this specific device?

[00:13:08] Speaker 02:
Right.

[00:13:08] Speaker 02:
So claims 32 and 33 take out the helix requirement.

[00:13:12] Speaker 02:
And by taking those out, they're just claiming middle, which preexisted.

[00:13:18] Speaker 02:
well predated the critical date of the past.

[00:13:20] Speaker 04:
So that takes care of those claims.

[00:13:22] Speaker 04:
What about the rest of them?

[00:13:23] Speaker 02:
The other claims then require the combination.

[00:13:25] Speaker 02:
This is obviousness.

[00:13:26] Speaker 02:
And I don't know if your honor wants to talk about Galloway at this point for claim 20 or not.

[00:13:31] Speaker 02:
But what we have as to the obviousness claims, and this is everything up to 32, we have as clear a case for a motivation to combine.

[00:13:41] Speaker 02:
All we're doing is saying take middle, which plainly anticipates 32 and 33, but doesn't use a helical groove.

[00:13:48] Speaker 02:
something like this.

[00:13:50] Speaker 02:
All we do is change this, and I know that isn't reflected in the written record, and change it to a helix.

[00:13:56] Speaker 02:
And we have multiple prior art references that show a helix in very, very similar contexts, particularly Kaplan and Sadat.

[00:14:05] Speaker 02:
And for motivation to combine, it's hard to see how we could have a clearer motivation to combine than we do in this case.

[00:14:12] Speaker 02:
For these, in middle itself, we have the motivation within the references itself.

[00:14:16] Speaker 02:
Middle at column seven, line 26 says, varying the number of forward and rear bends of cam groove can vary the number of complete reciprocations per revolution.

[00:14:27] Speaker 04:
But you're assuming that Galloway then is accepted as a reference.

[00:14:35] Speaker 04:
Perhaps it would be helpful to talk about the claims that are more limited.

[00:14:39] Speaker 02:
Sure.

[00:14:40] Speaker 02:
So we have really three sets of claims.

[00:14:42] Speaker 02:
You raised a good point.

[00:14:43] Speaker 02:
We have 32 and 33, which are plainly anticipated by middle.

[00:14:49] Speaker 02:
Then we have a whole set of claims, other than claim 20 and perhaps 22, I apologize, I don't remember off the top of my head.

[00:14:55] Speaker 02:
We have a whole set of claims that

[00:14:59] Speaker 02:
only require a combination of middle with Kaplan or Sadat, which are also tissue cutting medical devices plainly within the same field that have the helical cutter.

[00:15:10] Speaker 02:
Then we have claim 20, which has a very specific claim.

[00:15:14] Speaker 02:
20 is just talking about the shape of the follower, the thing that follows the groove that causes that isn't found in Kaplan and Sadat.

[00:15:21] Speaker 02:
It is found in Galloway.

[00:15:23] Speaker 02:
So that's why Galloway has to be brought into discussion for that one.

[00:15:26] Speaker 02:
that third set of claims.

[00:15:28] Speaker 02:
So maybe I'll work up the chain and start with Galloway, if that pleases the board.

[00:15:33] Speaker 04:
What's your answer to their argument that the position that you're presenting is really one of hindsight?

[00:15:41] Speaker 04:
Once you see what they actually did in this crowded field, because they're not the first, there are several who have tried to solve this problem with one form or another of device, but they didn't do exactly.

[00:15:56] Speaker 04:
what these guys did.

[00:15:57] Speaker 04:
And after we see what they did, let's assume, I don't know, but assume that there's something desirable about their final product, or else we wouldn't be fighting about it, that only with hindsight do you put together this piece and that piece and that piece and say, of course, any fool would have done it.

[00:16:18] Speaker 02:
Sure.

[00:16:18] Speaker 02:
And just to be clear, at trial, Your Honor, the only thing that was at issue were the claims that were plainly anticipated.

[00:16:24] Speaker 02:
So for completeness,

[00:16:26] Speaker 02:
We talked about the obviousness combination.

[00:16:28] Speaker 02:
So when you say what other people did, we weren't accused at trial of doing the claims that were only obviousness-directed.

[00:16:37] Speaker 04:
And so what would happen if, for whatever reason, based on Galloway or whatever, that some of the claims survive the anticipation rejection?

[00:16:47] Speaker 04:
Is this a matter of going back to the court?

[00:16:50] Speaker 02:
For purposes of our case, going back to the court,

[00:16:55] Speaker 02:
The verdict would be overturned because it was only based on the claims that are anticipated.

[00:17:01] Speaker 02:
But obviously, for our sake and any other developer out there who's facing the prospect of all these other claims, if they're invalid, we should deal with them now.

[00:17:10] Speaker 02:
And that's what the PTAP doesn't just deal with claims that are an issue in litigation.

[00:17:15] Speaker 02:
It deals with claims that are in the same patent.

[00:17:19] Speaker 02:
We brought it because of claims 32 and 33.

[00:17:21] Speaker 02:
But while we're here, let's talk about the other claims.

[00:17:25] Speaker 02:
So Middle and Kaplan each say, Middle at column 7, line 26, and Kaplan at column 15, line 30, each say, vary the shape of the groove if you want to change the relationship between translation, reciprocation on the one hand and rotation on the other.

[00:17:43] Speaker 02:
They say mix and match.

[00:17:44] Speaker 02:
I mean, this is no different than you have a drill with a Phillips head bit saying, if you want to do masonry, change the bit out.

[00:17:52] Speaker 02:
And then you have a masonry drill that says, if you want to go into wood, change the bit out.

[00:17:58] Speaker 02:
And we have each reference pointing to the shape of the grooves and say, shape of groove, do whatever you want.

[00:18:05] Speaker 02:
And in fact, Kaplan goes so far as to say why you would want to do it.

[00:18:08] Speaker 02:
Prime deficiencies of the prior art is insufficient tissue extraction having to do with the throw of the cutting device, how far it goes versus how fast you want it to turn.

[00:18:21] Speaker 02:
So we're told time and again in a Palin's brief that there's insufficient motivation to combine.

[00:18:27] Speaker 02:
The motivation is talked about within the references itself.

[00:18:30] Speaker 02:
We don't need to use an expert's testimony.

[00:18:32] Speaker 01:
And apparently, you don't care about this because this is not the basis for your prevailing in district court.

[00:18:37] Speaker 01:
But the Galloway reference, why is that analogous?

[00:18:40] Speaker 01:
I mean, under our testing clay in those cases,

[00:18:43] Speaker 01:
I don't understand how it's reasonably pertinent to the same problem.

[00:18:47] Speaker 02:
So, understood.

[00:18:49] Speaker 02:
And to be clear, Your Honor, what we're relying on, or what we relied on, and what we believe the PTAB relied on, was the second prompt of the in-ray Brigio test, where what is analogous to art A can be the same field of endeavor.

[00:19:02] Speaker 02:
We're not talking about that.

[00:19:03] Speaker 02:
What we're talking about is reasonably pertinent to the particular problem.

[00:19:06] Speaker 01:
And let me give you a... But the problem here is cutting a certain type of tissue.

[00:19:11] Speaker 01:
And I mean, this seems like the board is just searching for something that has this particular, you said it was some kind of shape on the end or something, whatever it is.

[00:19:21] Speaker 01:
Galloway is not a drill, it's not a cutter, it's to wind fiberglass, right?

[00:19:27] Speaker 02:
Your Honor, I respectfully disagree with that assessment of what the problem is, and I think the best evidence that my version might be right is to look at the final reference in the 459 patent itself.

[00:19:41] Speaker 02:
If we look, and in fact, at trial we were told this was the aha moment.

[00:19:45] Speaker 02:
If you look at the other publications, and most of the patents there are medical device patents.

[00:19:51] Speaker 02:
But the final thing, the aha moment is, quote, fishing reel produced and sold by Shimano of Japan into the US.

[00:19:59] Speaker 03:
Wait, hang on.

[00:20:00] Speaker 03:
Where are you looking?

[00:20:01] Speaker 02:
I'm looking on page two.

[00:20:03] Speaker 02:
Of the patent?

[00:20:04] Speaker 02:
Of the patent.

[00:20:05] Speaker 02:
So appendix 49.

[00:20:06] Speaker 02:
Sorry, I'm going to jump to it, give you the appendix site.

[00:20:11] Speaker 02:
Appendix 49, lower right-hand corner, well, it's mostly at the top of the page.

[00:20:17] Speaker 03:
You see under other publications... You're saying the fact that the patent examiner looked at a fishing reel prior art reference shows that this is analogous?

[00:20:24] Speaker 02:
It wasn't that the patent examiner looked at it.

[00:20:27] Speaker 02:
That was what the patentee said, this is the motion that I was trying to capture in the medical device.

[00:20:36] Speaker 02:
Where did he say that?

[00:20:37] Speaker 02:
He said that in the trial court.

[00:20:40] Speaker 02:
That was, I'm trying to remember whether it was in the prosecution.

[00:20:42] Speaker 01:
So we don't have that.

[00:20:43] Speaker 01:
You just have a fair citation here.

[00:20:45] Speaker 02:
Yes, correct.

[00:20:46] Speaker 03:
So what about the fact that cases like Odeker say that it has to be directed to the particular problem to which the inventor was trying to address, which here, looking at the name of the patent, the part of the patent that talks about this patent is directed to blah, blah, blah.

[00:21:06] Speaker 03:
directed to the idea that you want to cut rigid tissue?

[00:21:11] Speaker 02:
Yes, but I think that's one level.

[00:21:12] Speaker 02:
And this goes to Judge Hughes' question, too.

[00:21:14] Speaker 02:
I think reasonable minds can differ on this.

[00:21:17] Speaker 02:
But I would say, let's suppose I'm coming up with an oil well drilled, and I need the bit to go really fast.

[00:21:24] Speaker 02:
Is the problem that I need to get a bit to go really fast, is that how we define the problem?

[00:21:28] Speaker 02:
Or is the problem that I need to get through basalt to get to oil?

[00:21:31] Speaker 02:
I would say the former is the more accurate

[00:21:34] Speaker 02:
description of what the problem to be solved is.

[00:21:37] Speaker 02:
Here, the issue, because the cutting of the tissue, the specific tissue issue, isn't in the claim.

[00:21:43] Speaker 02:
What we're trying to do is get a certain motion.

[00:21:45] Speaker 03:
It is in the claim.

[00:21:46] Speaker 03:
It's in the preamble, isn't it?

[00:21:48] Speaker 02:
But not the semi-soft, semi-written... Yeah, but it is the idea of cutting tissue.

[00:21:53] Speaker 02:
Agreed.

[00:21:54] Speaker 03:
Let me just back up for a minute, because maybe I didn't... I don't think I asked my question well.

[00:21:58] Speaker 03:
So my question is, as a legal matter,

[00:22:01] Speaker 03:
given that we're trying to, you know, there's necessarily a hindsight determination when you're looking at obviousness.

[00:22:09] Speaker 03:
But we don't want to rely unfairly.

[00:22:12] Speaker 03:
And the question is, would one of ordinary scale in the art, not the inventor, the inventor went to fishing reels because he already knew what he was looking for.

[00:22:19] Speaker 03:
He had an idea.

[00:22:21] Speaker 03:
But would one of ordinary scale in the art, faced with the problem that the inventor was faced with, go to glass thread

[00:22:32] Speaker 03:
I guess.

[00:22:33] Speaker 03:
Would it go to the prior art like this particular reference that was relied on?

[00:22:41] Speaker 03:
And so how do you define the problem?

[00:22:44] Speaker 03:
I think it's a legal question.

[00:22:46] Speaker 03:
Can we look to district court testimony to see whether there were other problems that the inventor, as he was developing his invention, encountered?

[00:22:57] Speaker 03:
Or are we supposed to look at the problem

[00:22:59] Speaker 03:
that the patent is describing.

[00:23:01] Speaker 03:
That's a really interesting question, Your Honor.

[00:23:04] Speaker 02:
And I don't have a facile answer to it.

[00:23:06] Speaker 02:
I mean, I think it is a challenge.

[00:23:11] Speaker 02:
My instinct says that if you're developing a medical drill and you want it to go fast for a particular reason, it is within the ambit of what you're trying to do.

[00:23:21] Speaker 02:
And remember, one of skill in the art here is someone with an engineering degree in five years.

[00:23:25] Speaker 02:
So it's not specific to this area.

[00:23:27] Speaker 02:
You're assumed to be an engineer.

[00:23:29] Speaker 02:
that you would look at what Black and Decker's doing to make drills go fast.

[00:23:34] Speaker 01:
Well, if this was a drill, even if it wasn't a medical drill, you might have a better argument.

[00:23:41] Speaker 01:
It's not even a drill.

[00:23:44] Speaker 01:
Galway's not a drill, right?

[00:23:46] Speaker 01:
It wraps some kind of fiberglass or something around.

[00:23:50] Speaker 01:
I can't figure out what it actually does.

[00:23:53] Speaker 01:
But it's certainly not a drill.

[00:23:55] Speaker 01:
It's not in the medical field.

[00:23:57] Speaker 01:
It just seems to me it's a step too far that the board basically found obvious combinations for everything based upon other medical devices and drills, and didn't for this one claim, maybe two, and look somewhere else.

[00:24:11] Speaker 01:
But it really seems like it's a reach.

[00:24:13] Speaker 02:
I take your point, Your Honor.

[00:24:15] Speaker 02:
And to be candid, below we argue that single reference and obviousness is our lead argument on this point, because the notion of having an arch bridge shaped follower

[00:24:27] Speaker 02:
and frankly, an alternative ground for firmance, that notion of having an arch bridge follower, that's not great shakes here.

[00:24:34] Speaker 02:
And the fact that the examiner rejected single reference obviousness and said, I'm not going to accept that it's in the toolkit of one of skill.

[00:24:41] Speaker 02:
I need you to put forward a specific reference.

[00:24:43] Speaker 02:
And this is the one they latched onto.

[00:24:45] Speaker 02:
So I take your point, Your Honor, and I'm not asking you to radically expand the Bishyo line of questioning.

[00:24:52] Speaker 02:
But when we have a relatively simple technology

[00:24:56] Speaker 02:
like a drill, and we're looking for bits and pieces of plastic in particular shapes, that the shortcut, and that may be the way, maybe that's not the fairest way to phrase it, but that might be the most accurate way to phrase it, the shortcut of pointing to Galloway specifically as opposed to saying everybody knew, it's still in the art, that you could shape a follower as a ball or a stick, or in this case an arch bridge, that might have been the cleaner way to do it.

[00:25:25] Speaker 02:
I take your point.

[00:25:27] Speaker 02:
Unless the panel has any other questions.

[00:25:31] Speaker 04:
I think we're okay.

[00:25:33] Speaker 04:
Good.

[00:25:34] Speaker 04:
Thank you, Mr. Wolff.

[00:25:39] Speaker 04:
Mr. Lenny.

[00:25:41] Speaker 00:
So I think we have confirmed that claims 20 and 22 are unique to the Galloway reference, that those require the Galloway reference.

[00:25:49] Speaker 00:
Claims 20 and 22.

[00:25:51] Speaker 03:
And claim 21 is not at issue before the PTAP?

[00:25:55] Speaker 00:
I think 21 was an issue.

[00:25:58] Speaker 03:
21 covered by a different combination of prior art.

[00:26:03] Speaker 00:
Yes.

[00:26:05] Speaker 00:
But two points on the Gallo issue.

[00:26:07] Speaker 00:
I think that the board did improperly define the problem to be solved extremely broadly by removing any reference to surgical devices, cutting tissue, cutting tissue at all.

[00:26:20] Speaker 00:
And one point on that issue is that the examiner actually did define the problem to be solved

[00:26:26] Speaker 00:
in line with the way Smith and Neffy describes it.

[00:26:28] Speaker 00:
So the examiner described the problem to be solved as how to initiate and cut and remove large volumes of semi-rich tissue.

[00:26:35] Speaker 00:
So that was the examiner's description of the problem to be solved.

[00:26:38] Speaker 00:
The board, however, modified that and broadly expanded it to just simply refer to the use of a rotational force to impart different types of motion.

[00:26:47] Speaker 00:
So it removed all reference to cutting tissue or a surgical device whatsoever.

[00:26:52] Speaker 00:
But I do want to go back to the

[00:26:55] Speaker 00:
independent claim 32 and describe the novelty of that claim over the middle reference.

[00:27:01] Speaker 00:
And I think it's important to recognize that the middle reference is imparting a motion that is completely different than the motion that's imparted by the helical members that are shown in figures 3a and 3b.

[00:27:14] Speaker 00:
So the middle device has a continuous groove that is constantly curved, and it doesn't have any straight sections.

[00:27:22] Speaker 00:
And Hologic's expert

[00:27:25] Speaker 00:
acknowledged this and explained that the middle device could be modified if you had straight sections that would impart a constant velocity translation motion.

[00:27:37] Speaker 00:
So, Holage acknowledged that, and that would be under Smith and Nephew's proposed instructions for translate, but they acknowledged that middle would need to be modified in order to have the separate reciprocation and translation motions.

[00:27:50] Speaker 00:
So, that's the novelty of claims 32 and 33 over the middle reference.

[00:27:55] Speaker 00:
And again, we are relying on the helical structure that's shown in the specification, but we're not reading the helical structure into the claims.

[00:28:03] Speaker 00:
And that's demonstrated by the fact that Hologic's expert is contending that the middle device, which does not utilize the helical structure at all, that the middle device could be modified to have straight segments, which would impart this separate translation motion that we're arguing.

[00:28:22] Speaker 00:
And what that demonstrates is that there's another structure out there that's non-helical that could satisfy the claim.

[00:28:28] Speaker 00:
So it's not that we're reading the helical structure into the claims.

[00:28:32] Speaker 00:
A device that doesn't use the helical structure could still impart the separate rotation, translation, and reciprocation.

[00:28:39] Speaker 00:
And again, that's emphasized in the specification that discloses how the cutting occurs during translation.

[00:28:46] Speaker 00:
And if you look at the specification, it explains that the cutting window is where the cutting happens.

[00:28:52] Speaker 00:
The tissue is cut when the tissue is in the presence of the cutting window.

[00:28:56] Speaker 00:
And the specification also explains that the length of the cutting window is shorter than the overall length of the helical member.

[00:29:04] Speaker 00:
So the translation is happening and the cutting is happening in that middle portion of the helical member where the helical groove is at a constant pitch, which imparts a steady

[00:29:16] Speaker 00:
translation motion.

[00:29:18] Speaker 00:
Once you get to the ends of the helical structure, the pitch of those grooves changes, and that's when the reciprocation starts.

[00:29:26] Speaker 00:
The reciprocation is the act of slowing down, stopping, turning around, and speeding back up.

[00:29:31] Speaker 00:
But again, the cutting happens at a different time.

[00:29:34] Speaker 00:
The specification is clear that the cutting happens in column five.

[00:29:37] Speaker 00:
In three different places, it describes the cutting happening during translation.

[00:29:41] Speaker 00:
And a skilled artisan looking at

[00:29:44] Speaker 00:
The specification as a whole would understand the claims are separately reciting rotation, translation, and reciprocation.

[00:29:52] Speaker 00:
This court has said construe the terms so that you don't end up rendering a claim term superfluous.

[00:29:59] Speaker 00:
That's exactly what the board did.

[00:30:00] Speaker 00:
The board never addressed our argument about how translation is being read out of the claim.

[00:30:06] Speaker 00:
And we believe that the specification as a whole does convey to a skilled artisan that you have three separate motions.

[00:30:13] Speaker 00:
Again, the two sections of the specification that are argued and that the board relied on as conflating translation and reciprocation are explained, as we did in our briefing and as I did earlier, that they're putting in context and explaining what motion is reciprocating.

[00:30:33] Speaker 00:
Because you absolutely can have a rotational motion that would reciprocate.

[00:30:37] Speaker 00:
You can have a translation motion that can reciprocate.

[00:30:40] Speaker 00:
So both of those sentences are explaining

[00:30:43] Speaker 00:
which of the motions is reciprocated.

[00:30:46] Speaker 00:
So I don't think that it's proper to look at the sentence, translation is reciprocating, out of context and rely simply on that statement to say that the specification fails to distinguish between the reciprocation and translation motion.

[00:31:02] Speaker 00:
If you read the specification as a whole, if you look at the way the specification discusses reciprocation and then discusses translation,

[00:31:09] Speaker 00:
And if you look at the drawings and the figures, in conjunction with that disclosure, a skilled artist would understand that you do, in fact, have three distinct motions here.

[00:31:18] Speaker 00:
And that's what we've claimed.

[00:31:20] Speaker 00:
And as indicated, that is a different motion than what the middle reference discloses.

[00:31:26] Speaker 00:
The middle reference is simply going back and forth in a constant state of deceleration, acceleration, deceleration, acceleration.

[00:31:34] Speaker 00:
There's no separate translation motion.

[00:31:36] Speaker 00:
And as I said, collogics.

[00:31:39] Speaker 00:
expert acknowledge that if you wanted to get that separate translation motion, you'd have to modify it to put straight segments in.

[00:31:45] Speaker 00:
That's not what the middle teaches.

[00:31:47] Speaker 00:
The middle doesn't anticipate those claims.

[00:31:49] Speaker 00:
And we respectfully request that you reverse the board's claim construction to give the full and effective meaning to each of these terms, rotation, translation, reciprocation.

[00:31:59] Speaker 04:
OK.

[00:31:59] Speaker 04:
Any questions, Mr. President?

[00:32:01] Speaker 04:
Any questions?

[00:32:02] Speaker 04:
Thank you.

[00:32:03] Speaker 04:
Thank you both.

[00:32:04] Speaker 04:
The case is taken under submission.